Every business needs to trademark its brand name to save its place in the market. Unfortunately, doing so could be quite expensive, not to forget the cost that would be incurred for hearings, if the trademark gets rejected. Therefore, it is required to follow the right strategy before laying hands on the trademark application.
Registering a trademark is a brand name or logo that is associated with goods or services offered by an individual or business. A trademark is a distinct visual symbol that represents a firm and might be a word, device, number, or colour combination. The proprietors/owners of the trademark use the trademark to identify their goods or services from those of other similar firms.
The registration of a trademark grants the trademark proprietor the exclusive right to use it. Third parties may not utilise a registered trademark for their products without the authorization of the trademark’s owner. In India, trademark registration is governed by the Trademarks Act, 1999 (‘Act’) and the Trademark Rules, 2017 (‘Rules’).
Trademark Registration Regimen in India:
Filing of Trademark Application
The applicant intending to file a trademark application should file it through the Form TM-A with the Registrar of Trademarks. In order to ease the process, the registration is now facilitated through online sources. Once the application is made, it is examined by the examiner to check if it is within the norms of the Act and the Rules. The examiner also verifies if the trademark is unique without any deceptive similarity with respect to the trademarks already registered or to the brands existing in the market. If there should be any discrepancies, objections are raised by the examiner in the examination report and thereafter communicated to the applicant.
The applicant is required to give explanations to the objections hence raised by the examiner within the stipulated time. The Trademark is registered or rejected by the Registrar, based on the replies given by the applicant.
Publication of Trademark
Once the trademark is granted, the Registrar advertises that the respective trademark is up for registration in the trademark journal.
The Trademark Name Search tool at Vakilsearch lets you find the previously registered trademarks to avoid copyright infringement.
An opposition for registration can be raised by any third party within three months from the date of the advertisement in the journal. A copy of this opposition is duly handed over to the applicant. Subsequently, the applicant has to file a counter-statement to the opposition hence raised, through the form TM-O within the stated time limit, failing on which the application will be deemed abandoned and rejected.
A copy of the counter-statement is passed to the party that raised the opposition, after which both the parties are summoned for a hearing by the Registrar. On hearing the parties, and examining the evidence thus submitted, the Registrar passes an order of acceptance or rejection of the trademark.
Trademark Registration Certificate
Once the time allotted for the opposition is expired, the registration will be granted by the Registrar. A registration certificate with the seal of the Trade Marks Registry is granted to the applicant.
Costs Incurred for Trademark Registration in India:
Start-ups often try to squeeze in their cost-cutting strategies when it comes to legal compliances. Trademark registrations, firstly not being mandatory and secondly being pricey, make them think twice before making an application for the same. The Trademark Rules 2017, had mentioned the fee required for filing and various other procedures involved thereafter here.
|Trademark Application Filing Cost (Official Fee)||Physical Filing||E-Filing|
|Trademark filing under one class for MSME (Micro Small and Medium Enterprises), Start-up||₹ 5000||₹ 4500|
|Trademark filing under one class for Companies||₹ 10000||₹ 9000|
Challenges in Implementing Trademarks in Business:
While it is urged in general that a business should apply for trademarks, there are quite a number of challenges in implementing the same. While a proprietor has pooled in the funds for setting up the business, pulling up the sleeves to get the brand name trademarked might be hard on the pocket. This is especially true in the case of start-ups and SMEs (Small and Medium-size Enterprises).
On the other hand, failing to trademark the brand name, would be putting the business at risk, as it might be infringed by other market players. This often turns out to be a double-edged sword for budding entrepreneurs. Therefore, a careful step-by-step analysis is required on how to get things right at the very first shot!
Strategies to Reduce Cost While Applying for Trademarks:
1. Online Application
A simple look at the table mentioned earlier shows that online filing is lesser as compared to physical filing. Not only is it a wee-bit economical, but also it saves a lot of time from having to go to the trademark office physically.
2. Selection of the Right Trademark
The Act and Rules are the Bible and should not be skipped reading before making a trademark registration. The dos and don’ts of selecting a trademark are clearly mentioned in the Act and following it to the t would prevent unwanted rejections and also avoid the unnecessary filing of responses thereafter.
Also, it is wise to carry out a trademark search before filing, to ensure that the mark isn’t similar or doesn’t exhibit a deceptive similarity to any existing trademarks. Carrying out the stated steps would save the fee for making another new application subsequently.
3. Filing Under the Right Class
It is imperative that the application for a trademark is made under the appropriate classes after checking the list of classes available. Filing under every random class under the impression that it would protect the trademark will turn futile and also expensive. Also, filing under the wrong class would result in the application being rejected and the applicant has to file all over again by paying the registration fee.
Likewise, failing to mention the right class in the application would require making another application using the Form TM-M to amend the class.
4. Registering Word Mark
Seldom is a brand name just a name alone. Often, it’s a combination of a name, a logo and at times even a tagline. For instance, the brand ‘NIKE’, has the trade name ‘NIKE’, a üsymbol, and a tagline ‘Just Do It’ altogether. In cases like these, it’s two-fold work and twice the expense when separate applications are filed for the name and the logo separately. It is hence prudent to register the brand as a single word mark to avoid the fee for two separate applications.
5. Delegating the Registration to an Expert
If the pointers thrown above were too much to ingest, one shortcut is to handle the registration work to the specialists in the field. Although the Act allows the proprietors to file their trademarks themselves it might be a wise idea to actually let the experts handle it. One might think handling it themselves would be fairly economical, but the same person would be in a fix if the application gets rejected and has to file the same application over and over again.
Although this service would require some amount of professional fee to be paid, it would save a lot more money and time for the applicant. A trademark professional would carry out an exhaustive search and would also mention the right class in the application, thus minimizing the chances of rejection.
In a business, therefore, the art of delegation is the key to success. Outsourcing the registration to our Trademark professionals at VakilSearch would ease the mind of the proprietor as it saves a lot of time, effort, and money. We go above and beyond when it comes to our client’s business and would ensure that the brand name is registered at the earliest without any interruption.
- Trademark Registration in the United States
- How to Obtain Foreign Trademark Registrations
- Why Trademark Registration Is Most Important